Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 7
`Entered: October 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`AUTOLOXER LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01271
`Patent 7,084,735 B2
`____________
`
`Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-01271
`Patent 7,084,735 B2
`
`I.
`
`INTRODUCTION
`
`Unified Patents Inc. (“Petitioner”) filed a Petition to institute an inter
`
`partes review of claims 1–3, 5, 6, and 28 of U.S. Patent No. 7,084,735 B2
`
`(Ex. 1001, “the ’735 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 3
`
`(“Pet.”). Autoloxer LLC (“Patent Owner”) did not file a Patent Owner
`
`Preliminary Response.
`
`We have authority to determine whether to institute an inter partes
`
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review
`
`may be not instituted unless “the information presented in the petition filed
`
`under section 311 and any response filed under section 313 shows that there
`
`is a reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based
`
`on the record before us and for the reasons that follow, we institute an inter
`
`partes review as to claims 1–3, 5, 6, and 28 of the ’735 patent on certain
`
`grounds of unpatentability.
`
`A.
`
`Related Proceedings
`
`The parties identify no pending administrative or judicial proceedings
`
`involving the ’735 patent. Pet. 1–2; Paper 6, 2. Petitioner identifies twelve
`
`district court proceedings, all of which have been dismissed, in which the
`
`’735 patent had been asserted. Pet. 1–2.
`
`B.
`
`The ’735 Patent
`
`The ’735 patent “relates generally to the field of selectively limiting
`
`one or more operational performance characteristics of a vehicle.” Ex. 1001,
`
`1:5–7. More specifically, the ’735 patent describes a system in which a
`
`remotely issued vehicle limitation control signal is received wirelessly by a
`
`device on a vehicle. Id. at 1:29–36. The received control signal is used to
`
`2
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`IPR2017-01271
`Patent 7,084,735 B2
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`limit a performance characteristic of a vehicle, such as speed. Id. at 1:36–
`
`40. According to the ’735 patent, this will avert or minimize the effects of a
`
`security breach, such as a carjacking. Id. at 1:13–20.
`
`C.
`
`The Challenged Claims
`
`Petitioner challenges claims 1–3, 5, 6, and 28. Claims 1 and 28 are
`
`independent claims. Claim 1 is illustrative of the challenged claims and is
`
`reproduced below:
`
`1. A system for
`comprising:
`
`limiting performance of a vehicle,
`
`a first controller located aboard said vehicle and configured to
`control, in accordance with a stimulus originating from a
`location local to the vehicle, to a first operational
`performance characteristic;
`
`a command device located remotely from the vehicle and
`configured to send a control signal via a wireless
`communication network;
`
`a receiving device located aboard said vehicle and configured to
`receive said control signal; and
`
`a second controller located aboard the vehicle and configured to
`limit, in response to said control signal, said control of said
`vehicle to a second operational performance characteristic
`when said stimulus indicates to said first controller to
`control said vehicle to the first operational performance
`characteristic;
`
`wherein said second controller is further configured to (i)
`transmit to said first controller, responsive to said control
`signal, a vehicle limitation command message to place
`said vehicle in a vehicle limitation mode, and (ii) cause a
`vehicle limitation flag to be stored in non-volatile
`memory, and wherein said vehicle limitation flag is
`indicative of maintaining said vehicle in said vehicle
`limitation mode.
`
`Id. at 9:57–10:14.
`
`3
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`IPR2017-01271
`Patent 7,084,735 B2
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`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`
`Reference(s)
`
`Basis1
`
`Challenged Claims
`
`Silvernagle2 and Chakraborty3
`
`§ 103(a) 1–3, 5, and 28
`
`Silvernagle, Chakraborty, and
`AAPA4
`
`§ 103(a) 6
`
`Pet. 19, 42.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016).
`
`Consistent with that standard, claim terms are generally given their ordinary
`
`and customary meaning, as would be understood by one of ordinary skill in
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’735 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA version of the statutory basis for unpatentability.
`
`2 U.S. Patent No. 6,253,143 B1 (issued June 26, 2001) (Ex. 1002,
`“Silvernagle”).
`
`3 U.S. Patent No. 5,839,534 (issued Nov. 24, 1998) (Ex. 1003,
`“Chakraborty”).
`
`4 Petitioner identifies the following statements in the Specification of the
`’735 patent as Applicant’s Admitted Prior Art (“AAPA”): “the J1922
`standard recites that a speed limit command code be transmitted at least
`every 250 ms to maintain a maximum vehicle speed in place.” Pet. 43
`(quoting Ex. 1001, 4:10–13).
`
`4
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`IPR2017-01271
`Patent 7,084,735 B2
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`the art in the context of the entire disclosure. See In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes constructions of two terms: “command message”
`
`and “flag.” Pet. 12–14. Having considered the evidence presented, we
`
`conclude that no express claim construction is necessary for our
`
`determination of whether to institute review of the challenged claims. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”).5
`
`B.
`
`Legal Principles
`
`An invention is not patentable as obvious “if the differences between
`
`the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention
`
`was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” 35 U.S.C. § 103(a). The question of obviousness is
`
`resolved on the basis of underlying factual determinations including: (1) the
`
`scope and content of the prior art; (2) any differences between the claimed
`
`subject matter and the prior art; (3) the level of skill in the art; and, (4) where
`
`in evidence, objective evidence of nonobviousness such as commercial
`
`success, long-felt but unsolved needs, and failure of others. Graham v. John
`
`
`5 Although we conclude that no express constructions are necessary at this
`time, the parties are encouraged to address during trial the term “located
`remotely” in claim 1, and specifically (1) whether that term imposes any
`spatial limitation regarding the location of the command device when it is
`used to send a control signal via a wireless communication network or (2)
`whether the claim term is broad enough to encompass any wireless
`communication regardless of the location of the device.
`
`5
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`Deere Co., 383 U.S. 1, 1718 (1966). When evaluating a combination of
`
`teachings, we also must “determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
`
`441, F.3d 977, 988 (Fed. Cir. 2006)). We analyze the grounds based on
`
`obviousness in accordance with the above-stated principles.
`
`C.
`
`Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`
`may be considered, including the “type of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are
`
`made; sophistication of the technology; and educational level of active
`
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`
`(citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955,
`
`962 (Fed. Cir. 1986)). In a given case, “one or more factors may
`
`predominate.” Id.
`
`Petitioner asserts that a person having ordinary skill in the art at the
`
`time of the invention “would have had at least a Bachelor’s Degree in
`
`electrical engineering, computer science, or a related subject or the
`
`equivalent and one year of experience working with vehicle network
`
`systems, or at least three years of experience working with vehicle network
`
`systems.” Pet. 8 (citing Ex. 1004 ¶ 29).
`
`Because Petitioner’s definition is supported by the testimony of its
`
`declarant, Robert Leale, for purposes of this Decision and based on the
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`6
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`IPR2017-01271
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`current record, we agree with and apply Petitioner’s definition of the level of
`
`ordinary skill in the art.6
`
`D. Obviousness based on Silvernagle and Chakrabarty
`
`Petitioner asserts that claims 1–3, 5, and 28 would have been obvious
`
`to a person of ordinary skill in the art at the time of the invention in light of
`
`the teachings of Silvernagle and Chakraborty. Petitioner relies on
`
`Silvernagle (Ex. 1002), Chakraborty (Ex. 1003), and the Declaration of
`
`Robert Leale (Ex. 1004). Based on the current record, we are persuaded that
`
`Petitioner has established a reasonable likelihood of prevailing on its
`
`asserted ground for the reasons explained below.
`
`1. Summary of Silvernagle
`
`Silvernagle7 is directed “an engine limiter which regulates the engine
`
`speed and ground speed of a powered vehicle, particularly an off-road
`
`vehicle.” Ex. 1002, 1:7–11. More particularly, Silvernagle “relates to a
`
`programmable electronic module which may be easily added to vehicles
`
`having electronic ignition systems to prevent dangerous or reckless
`
`operation of the vehicle.” Id. at 1:11–15. “Preferably, the vehicle control
`
`unit limits both ground speed and engine speed by suppressing or
`
`‘removing’ pulses from the original tachometer signal to prevent the
`
`combustion of fuel and thereby reduce engine power when the ground or
`
`engine speeds exceed predetermined limits.” Id. at 1:52–57.
`
`
`6 If Patent Owner proposes a different level of ordinary skill in the art in the
`Patent Owner’s Response, the parties are encouraged to address whether
`there are any material differences between the two proposals and what
`impact, if any, the different level has on the obviousness analysis.
`
`7 Silvernagle was not considered during prosecution of the ’735 patent.
`
`7
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`IPR2017-01271
`Patent 7,084,735 B2
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`A programmer unit “may be used for programming various operation
`
`parameters of [the] vehicle control unit.” Id. at 4:11–14. In one
`
`embodiment, shown in Figure 5 below, programmer unit 126 includes
`
`“[m]icrocontroller 170 [which] communicates the commands and parameter
`
`settings to the vehicle control unit 122 via 50 infrared port logic 176. The
`
`infrared port logic 176 communicates with infrared port logic 156 of vehicle
`
`control unit 122.” Id. at 5:49–53.
`
`
`
`Figure 5 “shows a block diagram of one embodiment of a handheld
`
`programmer unit which may be employed with the vehicle control unit.” Id.
`
`at 2:42–44. The programmer unit “can also be used to transport information
`
`to a central location for analysis and long term storage.” Id. at 5:66–67.
`
`2. Summary of Chakraborty
`
`Chakraborty discloses a system for implementing an intelligent cruise
`
`control on a vehicle using standard engine control modes. Ex. 1003,
`
`Abstract. The system includes an electronic control module (ECM) which
`
`controls an engine. Id. at 4:57–59. The ECM contains logic rules
`
`implemented in a programmed microprocessor to effect control of various
`
`vehicle systems and subsystems. Id. at 8:17–20. The ECM communicates
`
`with a variety of sensors, such as an electronic accelerator pedal sensor, and
`
`8
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`IPR2017-01271
`Patent 7,084,735 B2
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`controls the engine based on signals from these sensors. Id. at 7:6–11,
`
`11:31–40.
`
`Chakraborty further discloses the Society of Automotive Engineers
`
`(SAE) J1922 standard for providing electronic engine control for vehicles.
`
`Id. at 2:4–42. The SAE J1922 standard “define[d] various control modes for
`
`electronically controlled engines including a normal mode, a speed control
`
`mode, a torque control mode, and a speed and torque control mode.” Id. at
`
`2:15–18. Additionally, “override modes [could] be used to override the
`
`current operating mode and command the engine to [operate at] a particular
`
`engine speed or engine output torque.” Id. at 2:30–32. “The control mode is
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`based on current operating conditions and commands received by the engine
`
`controller[,] which may be generated by various other vehicle systems and
`
`subsystems or by the vehicle operator.” Id. at 2:32– 42.
`
`3. Claims 1 and 288
`
`Petitioner argues that the combination of Silvernagle and Chakraborty
`
`teaches all of the limitations recited in claim 1 and that a person of ordinary
`
`skill in the art would have been motivated to combine the teachings of the
`
`two references. Pet. 24–35.
`
`Petitioner argues Silvernagle teaches “[a] system for limiting
`
`performance of a vehicle,” as recited in claim 1. See id. at 24–26.
`
`Specifically, Petitioner argues Silvernagle teaches modifying a prior art
`
`configuration of an engine to limit a vehicle’s engine speed or ground speed.
`
`
`8 Petitioner primarily relies on the evidence and arguments presented for
`claim 1 to show that the prior art discloses the various limitations of claim
`28, which are similar to those of claim 1. Compare Pet. 24–35, with id. at
`38–42. Because our analysis of the two claims is substantially the same, we
`focus on claim 1.
`
`9
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`IPR2017-01271
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`Id. (citing Ex. 1002, 1:37–40, 1:42–46, 1:52–57, 3:28–33, 3:35–46, 4:11–13,
`
`4:65–5:7, 6:1–7, 6:52–57, Fig. 3; Ex. 1004 ¶¶ 56–59).
`
`Petitioner further argues Silvernagle teaches “a first controller located
`
`aboard said vehicle and configured to control, in accordance with a stimulus
`
`originating from a location local to the vehicle, to a first operational
`
`performance characteristic,” as recited in claim 1. See id. at 26–27.
`
`Specifically, Petitioner argues Silvernagle teaches a vehicle control system
`
`that passes a tachometer signal received from a tachometer sensor to an
`
`electronic ignition system. Id. at 26 (citing Ex. 1002, 3:40–46, 4:62–5:2,
`
`Fig. 1, 3; Ex. 1004 ¶¶ 60, 61). Petitioner further argues “the electronic
`
`ignition system controls the conversion of fuel by the engine based on the
`
`tachometer sensor to maintain a desired engine speed or ground speed.” Id.
`
`at 26–27 (citing Ex. 1002, 3:35–40; Ex. 1004 ¶¶ 60, 62).
`
`Petitioner also argues Silvernagle teaches “a command device located
`
`remotely from the vehicle and configured to send a control signal via a
`
`wireless communication network,” as recited in claim 1. See id. at 27. More
`
`specifically, Petitioner argues Silvernagle teaches a handheld programming
`
`unit for programming operation parameters and that the unit is not wired to
`
`the vehicle control unit and “can be used to transport information received
`
`from the vehicle to a central computer system for archiving and more
`
`extensive analysis.” Id. (citing Ex. 1002, 2:18–24, 4:11–13, 5:33–6:7, Fig.
`
`5; Ex. 1004 ¶¶ 63, 64).
`
`Petitioner also argues Silvernagle teaches “a receiving device located
`
`aboard said vehicle and configured to receive said control signal,” as recited
`
`in claim 1. See id. at 28. More specifically, Petitioner argues “[t]he
`
`microcontroller of the vehicle control unit is coupled to infrared port logic,
`
`10
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`which receives commands and parameter settings (e.g., engine speed limit,
`
`ground speed limit, acceleration limit) from the handheld programmer unit.”
`
`Id. (citing Ex. 1002, 5:23–33, Fig. 4, 5).
`
`Petitioner also argues Silvernagle teaches “a second controller located
`
`aboard the vehicle and configured to limit, in response to said control signal,
`
`said control of said vehicle to a second operational performance
`
`characteristic when said stimulus indicates to said first controller to control
`
`said vehicle to the first operational performance characteristic,” as recited in
`
`claim 1. See id. at 28–29. More specifically, Petitioner argues Silvernagle
`
`teaches a vehicle control unit which “monitors signals received from the
`
`tachometer sensor and the speedometer sensor and determines whether the
`
`engine speed or ground speed has exceeded a limit set by one of the
`
`operational parameters.” Id. at 28 (citing Ex. 1002, 1:52–62, 3:66–4:4).
`
`According to Petitioner, when the speed of the vehicle exceeds a pre-set
`
`limit, the vehicle control unit limits the firing of the ignition system to an
`
`amount associated with a second speed. Id. 28–29 (citing Ex. 1002, 5:2–15;
`
`Ex. 1004 ¶¶ 67–70).
`
`Petitioner also argues Silvernagle teaches “wherein said second
`
`controller is further configured to (i) transmit to said first controller,
`
`responsive to said control signal, a vehicle limitation command message to
`
`place said vehicle in a vehicle limitation mode,” as recited in claim 1. See
`
`id. at 29–30. More particularly, Petitioner argues that when an engine speed
`
`or ground speed exceeds a pre-set limit, the vehicle control unit produces a
`
`modified tachometer signal that is sent to the electronic ignition system to
`
`reduce engine power. Id. (citing Ex. 1002, 1:52–2:6; Ex. 1004; ¶¶ 71, 72.
`
`11
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`Petitioner also argues Silvernagle teaches “[wherein said second
`
`controller is further configured to] cause a vehicle limitation flag to be
`
`stored in non-volatile memory, and wherein said vehicle limitation flag is
`
`indicative of maintaining said vehicle in said vehicle limitation mode,” as
`
`recited in claim 1. See id. at 30–32. More particularly, Petitioner argues
`
`that programmable parameters, such as a limit on speed or acceleration, may
`
`be stored in nonvolatile memory within the vehicle control unit. Id. at 30–31
`
`(citing Ex. 1002, 5:23–33, 5:46–53, 5:62–66, 6:1–7; Ex. 1004 ¶¶ 73, 74).
`
`Petitioner also argues Silvenagle teaches a software loop shown in Figure 6
`
`which uses a KILLCOUNT to determine which path to follow. Id. at 31–32
`
`(citing Ex. 1002, 6:58–7:35, Fig. 6; Ex. 1004 ¶¶ 75–78). Petitioner further
`
`avers that because the software loop, which checks the engine and ground
`
`speed limits, repeats over time, “[t]he programmed engine speed and ground
`
`speed limits are therefore ‘indicative of maintaining said vehicle in said
`
`vehicle limitation mode.’” Id. at 32 (citing Ex. 1004 ¶¶ 75, 79).
`
`Although Petitioner argues Silvernagle discloses all of the limitations
`
`of claim 1, see id. at 24–31, Petitioner asserts in the alternative9 that
`
`Chakraborty teaches the “first controller” and that the “second controller is
`
`configured to (i) transmit to said first controller . . . a vehicle limitation
`
`
`9 Petitioner states it is relying on the teachings of Chakraborty “[t]o the
`extent a narrow interpretation of either of the terms ‘first controller’ or
`‘second controller is configured to (i) transmit to said first controller . . . a
`vehicle limitation command message to place said vehicle in a vehicle
`limitation mode’ is taken, and to the extent one might argue that the
`electronic ignition system of Silvernagle is not a controller, or that the
`modified tachometer signal of Silvernagle is not a vehicle limitation
`command message to place the vehicle in a vehicle limitation mode.” Pet.
`32.
`
`12
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`command message to place said vehicle in a vehicle limitation mode,” as
`
`recited in claim 1, see id. at 32–35. Specifically, Petitioner argues
`
`Chakraborty teaches an intelligent cruise control system which includes an
`
`electronic control module for controlling an engine based on signals
`
`received from various sensors. Id. at 32–33 (citing Ex. 1003, Abstract,
`
`4:57–59, 7:6–11, 8:17-20, 11:31–40; Ex. 1004 ¶ 81). Chakraborty further
`
`teaches using the SAE J1922 standard for controlling engines, including the
`
`use of an override mode which “could be used to override the current
`
`operating mode and command the engine to operate at a particular engine
`
`speed or engine output torque.” Id. at 33–34 (citing Ex. 1003, 1:56–59, 2:4–
`
`10, 2:15–21, 2:23–42; Ex. 1004 ¶¶ 82–83).
`
`Petitioner further argues that both Silvernagle and Chakraborty are
`
`“directed to systems designed to control speed of a vehicle” and, in light of
`
`“the similarities in structure, objectives, and operation between Silvernagle
`
`and Chakraborty,” a person of ordinary skill in the art at the time of the
`
`invention would have been motivated to implement Chakraborty’s technique
`
`of using an ECM and a standardized vehicle network protocol for
`
`communication in Silvernagle’s system. Id. at 34–35 (citing Ex. 1004
`
`¶¶ 84–85) (emphasis omitted). According to Petitioner, such a modification
`
`would have “provide[d] greater customization flexibility, by allowing
`
`standardized components from different manufacturers to be integrated
`
`together in a vehicle communications network.” Id. at 35 (citing Ex. 1004
`
`¶ 85). Petitioner further avers that such a modification “would have been
`
`within the abilities of a [person having ordinary skill in the art] and could be
`
`accomplished with a high chance of success.” Id. (citing Ex. 1004 ¶ 86).
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`We have reviewed Petitioner’s arguments regarding independent
`
`claims 1 and 28. On the present record, Petitioner has shown sufficiently for
`
`the purpose of institution that the combination of Silvernagle and
`
`Chakraborty teaches each limitation of claims 1 and 28, and that a person of
`
`ordinary skill in the art would have had reason to combine the references’
`
`teachings in the manner asserted. Accordingly, Petitioner has demonstrated,
`
`on this record, a reasonable likelihood of prevailing on its assertion that
`
`claims 1 and 28 are unpatentable over Silvernagle and Chakraborty.
`
`Claims 2, 3, and 5 depend from independent claim 1. We have
`
`reviewed Petitioner’s contentions regarding claims 2, 3, and 5. See id. at
`
`36–37. Having reviewed the record, we determine that Petitioner has shown
`
`sufficiently at this stage that the combination of Silvernagle and Chakraborty
`
`teaches each limitation of claims 2, 3, and 5, and that a person of ordinary
`
`skill in the art would have had reason to combine the references’ teachings
`
`in the manner asserted. Therefore, based on the evidence presented in the
`
`Petition, we are persuaded that Petitioner has demonstrated, on this record, a
`
`reasonable likelihood of prevailing on its asserted ground as to claims 2, 3,
`
`and 5.
`
`E. Obviousness over Silvernagle, Chakraborty, and AAPA
`
`Petitioner asserts that the subject matter of claim 6 would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention in
`
`light of the teachings of Silvernagle, Chakraborty, and AAPA. Petitioner
`
`relies on Silvernagle (Ex. 1002), Chakraborty (Ex. 1003), AAPA (see Ex.
`
`1001, 4:10–13), and the Declaration of Robert Leale (Ex. 1004). Based on
`
`the current record, we are persuaded that Petitioner has established a
`
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`reasonable likelihood of prevailing on its asserted obviousness ground for
`
`the reasons explained below.
`
`1. Summary of AAPA
`
`According to Petitioner, AAPA “discloses that ‘the J1922 standard
`
`recites that a speed limit command code be transmitted at least every 250 ms
`
`to maintain a maximum vehicle speed in place.’” Pet. 43 (quoting Ex. 1001,
`
`4:10–13.
`
`2. Claim 6
`
`Petitioner argues that, in light of the teachings of Chakraborty, it
`
`would have “been obvious to a [person of ordinary skill in the art] at the
`
`time of the alleged invention to modify the vehicle control unit of
`
`Silvernagle to transmit a control mode message in accordance with the SAE
`
`J1922 standard to an ECM.” Id. (emphasis omitted) (citing Ex. 1004 ¶ 118).
`
`Petitioner further argues AAPA teaches transmitting a vehicle limitation
`
`command message at least once every 250 milliseconds to comply with the
`
`J1922 standard. Id. (citing Ex. 1001, 4:10–13; Ex. 1004 ¶¶ 119). Petitioner
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`further argues that a person of ordinary skill in the art would have been
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`motivated to transmit that speed limit command code at least every 250
`
`milliseconds “to conform with the standard and ensure that a maximum
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`vehicle speed is maintained in place.” Id. at 43–44 (citing Ex. 1001, 4:10–
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`13; Ex. 1004 ¶¶ 120).
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`Having reviewed the record, we determine that Petitioner has shown
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`sufficiently for the purpose of institution that the combination of Silvernagle,
`
`Chakraborty, and AAPA teaches each limitation of claim 6, and that a
`
`person of ordinary skill in the art would have had reason to combine the
`
`references’ teachings in the manner claimed. Therefore, Petitioner has
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`IPR2017-01271
`Patent 7,084,735 B2
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`demonstrated, on this record, a reasonable likelihood of prevailing on its
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`assertion that claim 6 is unpatentable over Silvernagle, Chakraborty, and
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`AAPA.
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`III. CONCLUSION
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`We conclude that Petitioner has demonstrated a reasonable likelihood
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`of prevailing on its challenges to claims 1–3, 5, 6, and 28 of the ’735 patent
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`as set forth above. At this stage of the proceeding, we have not made a final
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`determination as to the patentability of any of these challenged claims or the
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`construction of any claim term.
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that an inter partes review is instituted as to claims 1–3,
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`5, 6, and 28 of the ’735 patent;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’735 patent is hereby instituted commencing on the
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`entry date of this Decision, and pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; and
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`FURTHER ORDERED that the trial is limited to the following
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`grounds of unpatentability, and no other grounds set forth in the Petition as
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`to claims 1–3, 5, 6, and 28 of the ’735 patent are authorized:
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`Claims 1–3, 5, and 28 under 35 U.S.C. § 103(a) as unpatentable
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`over Silvernagle and Chakraborty; and
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`Claims 6 under 35 U.S.C. § 103(a) as unpatentable over
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`Silvernagle, Chakraborty, and AAPA.
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`
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`IPR2017-01271
`Patent 7,084,735 B2
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`PETITIONER:
`
`David Cavanaugh
`Michael Van Handel
`Wilmer Cutler Pickering Hale and Dorr LLP
`david.cavanaugh@wilmerhale.com
`michael.vanhandel@wilmerhale.com
`
`Jonathan Stroud
`Ashraf Fawzy
`Unified Patents Inc.
`jonathan@unifiedpatents.com
`afawzy@unifiedpatents.com
`
`
`PATENT OWNER:
`
`David Bennett
`DIRECTION IP LAW
`dbennett@directionip.com
`
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